A Community trade mark registration provides its owner with rights in each of the 27 member states, and as the EU expands those rights are extended to new member states as well.
The most important right given to CTM owners is the right to take action anywhere within the EU to prevent others from using a trade mark in a way that is likely to mislead or confuse the public concerning an association between the producers of both the same and similar marks.
The Republic of Croatia is expected to accede to the EU in July 2013. At that time CTMs acquired before the day of acceptance of Croatia into the EU and international registrations with extended protection to the EU prior to accession will extend to the territory of Croatia.
In compliance with the Croatian Trademark Act, CTM applications filed as well as CTMs registered prior to accession will constitute earlier marks in terms of national applications and national trade marks acquired after the day Croatia is accepted.
However, these marks will not invalidate conflicting national trade marks unless the conditions of use provided for in article 15 of the Regulation on the Community trade mark are met. Those conditions are as follows: 1) the CTM must be put into actual use in the Community within five years after registration in connection with the goods or services in respect of which it is registered, or 2) such use must not have been suspended during an uninterrupted period of five years, unless just cause for non-use exists.
If the use of the CTM which is extended to the territory of Croatia after accession into the EU conflicts with the use of a national trade mark acquired before the date of accession or a national trade mark acquired on the basis of such an application filed prior to the date of accession, the holder of the national trade mark may file a lawsuit requesting a ban on the use of the CTM in Croatia. The plaintiff in order to succeed must prove that the CTM conflicts with his national trade mark.
After accession when these provisions take effect it will become clearer which issues will be problematic in practice and will possibly require further regulation.
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Andrej Matijević |
Matievich Law Offices
Kurelčeva 4
Zagreb, Zagrebačka županija HR – 10000
Croatia
Phone: +385 1 4828 855
Fax: +385 1 4828 866
